Sales of counterfeit L'Oréal goods infringes trademark says ECJ
eBay may be liable for trademark infringement where fake L'Oréal products are sold on its website, the European Court of Justice (ECJ) has held.
In its ruling, L'Oréal v eBay (Case C-324/09), the ECJ said online marketplaces such as eBay cannot claim exemption from liability for these infringements under Art 14(1) of the Ecommerce Directive 2000/31/EC, if they are aware that they are facilitating sales of an illegal nature.
This is so even where the website does not play an “active role” in the sale (assisting the seller by promoting the goods or optimising their presentation online).
In 2009, eBay was found not liable in the high court for the sale of L’ Oréal infringements but, in a separate case in the French courts, was found liable for failing to prevent the sale of counterfeit Louis Vuitton goods. Mr Justice Arnold in the High Court referred questions to the ECJ, leading to last week’s judgment.
Kirsten Gilbert, partner at Marks & Clerk Solicitors, said: “European trade mark law has been straining under the pressure of dealing with the internet age.
“The information revolution and the rise of online commerce have created a host of scenarios never envisaged when our laws were drafted. Today’s ruling will give national courts guidance on how to approach just one of these scenarios.
“We have seen over the past years different national courts finding in favour of opposing parties in similar cases. Inconsistency in the area of the online counterfeiting trade will be reduced following this ruling. Brand owners will now be working with a legal system which protects one of their key assets – their brand identity.”
The judgment states: “As the UK government has rightly observed, the mere fact that the operator of an online marketplace stores offers for sale on its server, sets the terms of its service, is remunerated for that service and provides general information to its customers cannot have the effect of denying it the exemptions from liability provided for by Directive 2000/31…
“Where, by contrast, the operator has provided assistance which entails, in particular, optimising the presentation of the offers for sale in question or promoting those offers, it must be considered not to have taken a neutral position between the customer-seller concerned and potential buyers but to have played an active role of such a kind as to give it knowledge of, or control over, the data relating to those offers for sale. It cannot then rely, in the case of those data, on the exemption from liability referred to in Art 14(1) of Directive 2000/31.”
